Case C-96/09 P

Anheuser-Busch Inc.

v

Budějovický Budvar, národní podnik

(Appeal – Community trade mark – Regulation (EC) No 40/94 − Article 8(4) − Application for registration of the word and figurative mark BUD − Opposition − Indication of geographical origin ‘bud’ − Protection under the Lisbon Agreement and bilateral treaties between two Member States – Use in the course of trade – Sign of more than mere local significance)

Summary of the Judgment

1.        Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade – Conditions – Existence of an earlier right which has not been invalidated by a decision of a court that has become final

(Council Regulation No 40/94, Art. 8(4))

2.        Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade – Use of the sign in the course of trade – Meaning

(Council Regulation No 40/94, Arts 8(4) and 43(2) and (3))

3.        Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade – Local significance of sign

(Council Regulation No 40/94, Art. 8(4))

4.        Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade – Use of the sign in the course of trade – Temporal condition

(Council Regulation No 40/94, Art. 8(4)(a))

5.        Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade – Sign conferring on its proprietor the right to prohibit the use of a subsequent trade mark – Burden of proof

(Council Regulation No 40/94, Arts 8(4)(b) and 74(1))

1.        If an opponent is to be able, on the basis of Article 8(4) of Regulation No 40/94 on the Community trade mark, to prevent registration of a Community trade mark, it is necessary – and sufficient – that, at the date on which the Office for Harmonisation in the Internal Market (Trade Marks and Designs) determines whether all the conditions for opposition are met, an earlier right may be claimed which has not been declared invalid by a judicial decision that has become final.

In those circumstances, although it is for the Office, when it decides upon an opposition based on Article 8(4) of Regulation No 40/94, to take into account decisions of the courts of the relevant Member States concerning the validity or classification of the earlier rights claimed to ensure that those rights continue to produce the effects required by that provision, it is not for it to substitute its assessment for that of the competent national courts – a power which, in any event, Regulation No 40/94 does not confer on it.

(see paras 94-95)

2.        As regards the words ‘used in the course of trade’ in Article 8(4) of Regulation No 40/94 on the Community trade mark, that provision does not concern the ‘genuine’ use of a sign relied on in support of an opposition and there is nothing in the wording of Article 43(2) and (3) of the regulation to suggest that the requirement for proof of genuine use applies to such a sign.

Whilst it is true that the words ‘used in the course of trade’ in Article 8(4) of Regulation No 40/94 do not necessarily have to be interpreted in the same way as they are in relation to Article 9(1) of that regulation or Articles 5(1) and 6(1) of Directive 89/104 to approximate the laws of the Member States relating to trade marks, since account must be taken of the purpose of each of those provisions, the fact remains that if those words are interpreted as meaning, in essence, that the sign need only be put to some commercial use, such an interpretation is consistent with their usual meaning.

If the requirement for genuine use were imposed on the signs covered by Article 8(4) of Regulation No 40/94 on the same conditions as those set out in Article 43(2) and (3) of the regulation, such an interpretation would impose on those signs requirements specific to oppositions based on earlier trade marks, and, by contrast with those oppositions, in oppositions under Article 8(4) of Regulation No 40/94 the opponent must also show that the sign concerned gives him the right, according to the law of the Member State concerned, to prohibit use of a subsequent trade mark.

Moreover, if the requirement for genuine use laid down for earlier trade marks were applied by analogy to the earlier rights referred to in Article 8(4) of Regulation No 40/94, that would also be contrary to the, in principle, autonomous nature of that relative ground for refusal, which is made apparent by conditions specific to that ground and which must also be interpreted in the light of the very wide variety of earlier rights that may be covered by that ground.

As regards the question whether the words ‘used in the course of trade’ mean that use of a geographical indication relied on under Article 8(4) of Regulation No 40/94 must be made in accordance with the essential function of such a sign, namely to guarantee to consumers the geographical origin of the goods and the special qualities inherent in them, it is sufficient to find that the sign relied on in support of the opposition is used in the course of trade and that the fact that that sign is identical to a trade mark does not mean that it is not used in the course of trade. As regards the function to be performed by use of the sign, the latter must be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor.

Lastly, deliveries made without charge may be taken into account in order to ascertain whether the requirement for use of the earlier right in the course of trade is met, if those deliveries could have been made in the context of a commercial activity with a view to economic advantage, namely to acquire new outlets.

(see paras 142-149, 152)

3.        Where the geographical extent of the protection of a sign is merely local, the sign must indeed be regarded as of mere local significance. However, it does not follow that the condition laid down in Article 8(4) of Regulation No 40/94 on the Community trade mark is met in every case simply by virtue of the sign in question being protected in a territory which cannot be regarded as merely local because the territory of protection extends beyond the territory of origin.

The common purpose of the two conditions laid down in Article 8(4) of Regulation No 40/94 is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite – that is to say, important and significant in the course of trade – from preventing registration of a new Community trade mark. A right of opposition of that kind must be reserved to signs which actually have a real presence on their relevant market.

Accordingly, the significance of a sign cannot be a function of the mere geographical extent of its protection, since, if that were the case, a sign whose protection is not merely local could, by virtue of that fact alone, prevent registration of a Community trade mark – and could do so even though the sign is used only to a very limited extent in the course of trade.

It follows that, in order to be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.

In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of that sign as a distinctive element vis-à-vis its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance.

In any event, it is only in the territory in which the sign is protected, whether the whole or only part of it is concerned, that the applicable law confers on the sign exclusive rights which may enter into conflict with a Community trade mark. The condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. The significance of the sign cannot therefore be inferred from a cumulative assessment of the use of the sign in all the relevant territories.

(see paras 156-160, 162-163)

4.        It is necessary to apply to the requirement for use in the course of trade of the sign relied on in opposition the same temporal condition as that expressly laid down in Article 8(4)(a) of Regulation No 40/94 on the Community trade mark with regard to acquisition of the right to the sign, that is to say, that of the date of application for registration of the Community trade mark.

In view, in particular, of the considerable period of time which may elapse between the filing of an application for registration and its publication, applying that temporal condition provides a better guarantee that the use claimed for the sign concerned is real and not an exercise whose sole aim has been to prevent registration of a new trade mark.

Furthermore, as a general rule, where the sign is used exclusively or to a large extent during the period between filing of the application for a Community trade mark and publication of the application, that will not be sufficient to establish that the use of the sign in the course of trade has been such as to prove that the sign is of sufficient significance.

(see paras 166-168)

5.        Article 8(4)(b) of Regulation No 40/94 on the Community trade mark lays down the condition that, pursuant to the law of the Member State governing the sign relied on under Article 8(4), that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. Furthermore, in accordance with Article 74(1) of Regulation No 40/94, the burden of proving that that condition is met lies with the opponent before the Office for Harmonisation in the Internal Market (Trade Marks and Designs).

In that context and in relation to earlier rights, regard must be had, in particular, to the national rules advanced in support of the opposition and to the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign concerned falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited. It follows that the opponent must establish only that he has available to him a right to prohibit use of a subsequent trade mark and that he cannot be required to establish that that right has been used, in other words that the opponent has actually been able to prohibit such use.

(see paras 188-191)